Irell In The News

Gary Frischling is a partner in the Los Angeles office of Irell & Manella LLP. Mr. Frischling has served as co-chair of the firm’s intellectual property department and is a member of the firm’s executive committee. He is also a registered patent attorney.

Mr. Frischling’s practice focuses on intellectual property litigation and pre-litigation strategic counseling, as well as a variety of other intellectual property transactions and matters. He represents a wide variety of clients in matters involving technologies as diverse as microprocessor architecture, drug delivery systems, medical devices, data encryption, monoclonal antibody therapies and new drugs. His litigation practice includes patent, copyright, trademark, unfair competition, and trade secret litigation for a broad range of clients, from Fortune 10 companies to startups. On the transactional and counseling side, his practice includes IP licensing, software development, and acquisition deals; IP reviews in connection with mergers, acquisitions, and asset purchases; trademark advice and prosecution; patent prosecution; and general IP advice and counseling.

Mr. Frischling has been selected for inclusion in The Best Lawyers in America for the past 12 years in the specialty area of intellectual property law and was named Best Lawyers’ 2014 Los Angeles Litigation – Patent “Lawyer of the Year.” Mr. Frischling was also named to the Southern California "Super Lawyers" list by Los Angeles Magazine for the years 2006-2017. The Los Angeles and San Francisco Daily Journal has repeatedly recognized Mr. Frischling as one of California's "75 Leading IP Litigators." Intellectual Asset Management magazine also listed him among the top patent litigators in California in both the 2010 and 2011 edition of the IAM Patent Litigation 250, describing him as an "excellent practitioner." In its Patent Litigation: full coverage section, The Legal 500US 2010 describes Mr. Frischling as "versatile" and "noted for his expertise in high tech and pharmaceutical disputes." He has also been named by the Los Angeles Times Magazine as one of the best lawyers in Southern California for IP Litigation.

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Representative Matters

The following is a list of selected litigation and transactional/counseling matters for which Mr. Frischling has had key responsibility:

Litigation Matters:

AIDS Healthcare Foundation, Inc. v. Gilead Sciences Inc. et al. – Mr. Frischling secured a dismissal of a lawsuit challenging Gilead's new HIV and hepatitis B medication tenofovir alafenamide (TAF). AIDS Healthcare Foundation brought the lawsuit alleging that five patents owned or licensed by Gilead are invalid and that Gilead violated antitrust and unfair competition laws by first releasing TAF as part of multi-drug products. Judge William Alsup of the U.S. District Court for the Northern District of California granted Gilead’s motion to dismiss all claims after extensive briefing and a lengthy oral argument.

Wisconsin Alumni Research Foundation v. Apple Inc. – Mr. Frischling represented Wisconsin Alumni Research Foundation (WARF) in this hard-fought infringement litigation. After a two-week trial, a federal jury in the Western District of Wisconsin handed down a $234 million damages verdict in favor of WARF. The damages verdict followed a liability verdict finding all asserted claims of WARF’s U.S. Patent No. 5,781,752 infringed and not invalid. The case involved claims that Apple's A7, A8 and A8X system-on-chip designs and the iPhones and iPads that contain them infringe WARF's '752 patent covering a predictor circuit that significantly improves the speed and power efficiency of computer processors.

Apple Inc. v. Wisconsin Alumni Research Foundation (IPR2014-01567) – Mr. Frischling served as lead counsel for WARF in connection with Apple’s request for inter partes review (IPR) of WARF’s ‘752 patent, which was the subject of the above infringement suit. The PTO's Patent Trial and Appeal Board declined to authorize an IPR on any grounds asserted in Apple’s petition, finding that Apple did not demonstrate it was likely to prevail on any of the challenged claims.

Mylan Pharmaceuticals Inc. v. Gilead Sciences, Inc. (Patent Trial and Appeal Board, IPR2014-00885; IPR2014-00886; IPR2014-00887; and IPR2014-00888) – Irell & Manella secured wins for biotechnology leader Gilead Sciences Inc., defeating challenges brought by Mylan Pharmaceuticals to four Gilead patents related to the HIV drug tenofovir disoproxil fumarate (TDF). The PTAB declined to institute IPR proceedings on all four petitions, ruling Mylan was unlikely to prevail on any of the claims challenged in the petitions. The PTAB also denied Mylan’s petitions for rehearing. Mr. Frischling served as lead counsel before the PTAB for Gilead.

MSD Consumer Products, Santarus, Inc. et al. v Zydus Pharmaceuticals, Dr. Reddy's, Perrigo – Mr. Frischling represents plaintiffs in this series of Paragraph IV cases involving proposed generics for an over-the-counter proton pump inhibitor. He was able to secure early favorable resolutions on several of these cases and trial is scheduled for early 2014 for the one defendant that remains.

Santarus Inc. v. Par Pharmaceutical Inc. – Mr. Frischling represented appellant Santarus, Inc., a small innovative pharmaceutical company based in San Diego, in this case involving Santarus' drug Zegerid, which is used to treat disorders related to excess stomach acid. The district court found all of the asserted claims in the patents covering Zegerid to be obvious over the prior art. On appeal, the Federal Circuit held that eleven asserted claims in two patents were not obvious and reversed the district court on those claims. Because Par's generic was found to infringe the claims that were held to be valid, this decision clears the way for a trial on damages. As a result of the victory, two days following the decision Par announced that it had voluntarily ceased further distribution of the infringing product. News of the victory caused Santarus' stock price to soar over 14% in one day.

Genentech, Inc. v. The Trustees of the University of Pennsylvania – Mr. Frischling represented The Trustees of the University of Pennsylvania (Penn) in patent litigation involving Penn's U.S. Patent No. 6,733,752. Penn asserted that the primary use of Genentech's blockbuster anti-cancer drug Herceptin infringes Penn's patent. The court denied Genentech's motions for summary judgment of no direct infringement, no inducing infringement and invalidity. At the two day pre-trial conference, the court denied Genentech's attempt to strike the University's damages experts, clearing the way for the University to ask the jury for approximately $500 million in damages. The court also granted the University's motion to strike Genentech's testimony of good faith belief in non-infringement. Within two days of the orders, and just days before trial, the case settled on confidential terms.

Acacia Research/Microprocessor Enhancement Corp., et al v. Texas Instruments Incorporated – Mr. Frischling served as lead counsel and obtained summary judgment for TI in this second patent infringement case, SACV 08-1123 SVW (C.D. Cal.), brought against TI by Microprocessor Enhancement Corporation ("MEC"), a subsidiary of publicly-traded patent holding company Acacia Research Corporation. MEC alleged that TI's OMAP 2 and OMAP 3 families of products, which incorporate ARM1136 and ARM Cortex-A8 processors, respectively, infringed one of MEC's patents. MEC sought unspecified damages and a permanent injunction against TI. TI's OMAP processors are designed for multimedia, gaming and wireless mobile use, including in smart phones, GPS units and mobile internet devices. FBR Capital Markets projected that annual sales of OMAP products would soon exceed $700 million. MEC's infringement claims went beyond just TI, as ARM-licensed processors are made by many companies and MEC asserted infringement based on key aspects of ARM architecture. By some estimates over 3 billion ARM processors are sold every year. MEC also asserted claims against ARM, STMicroelectronics, Emulex Corporation and others in the same court. Irell & Manella took the lead on noninfringement, filing separate motions for summary judgment of noninfringement with respect to each of the two families of accused products. All of the other defendants joined TI's motions. Judge Stephen V. Wilson granted both of TI's motions, finding two independent bases for noninfringement with respect to each motion and awarding TI its costs of suit. Final judgment in favor of TI was entered and MEC appealed, but that appeal was later dismissed.

The Salk Institute for Biological Studies v. Ferring Pharmaceuticals, Inc. – Mr. Frischling represented Ferring Pharmaceuticals (“Ferring”), a European biopharmaceutical company, in this litigation brought by The Salk Institute for Biological Studies (“Salk”) in federal court in San Diego. In 1995, Ferring discovered “degarelix,” a peptide-based drug effective for treating prostate cancer. Soon thereafter it filed a patent on degarelix. This discovery occurred as part of a collaboration between Ferring and an independent consultant who also was a professor at Salk. From 1995 until 2008, Ferring further researched and developed degarelix, and it obtained FDA approval to market the product in December 2008. Salk filed suit in December 2010 – more than a decade after Ferring's first degarelix patent issued – alleging that Salk should be the exclusive owner of the patent rights in degarelix, that Ferring had engaged in unfair competition, and that Ferring's sales of degarelix infringe a Salk patent. Ferring moved to dismiss Salk's claims as failing to state a claim, time-barred and otherwise defective. The court held a preliminary telephonic hearing on the motion. Within a month of filing formal briefs, the case was settled and all claims against Ferring were dismissed with prejudice.

Wisconsin Alumni Research Foundation v. Intel Corp. – Mr. Frischling represented the Wisconsin Alumni Research Foundation ("WARF"), the patent management and licensing entity for the University of Wisconsin, in this litigation against Intel. WARF alleged that Intel's flagship Core Microarchitecture infringed a patent that arose from research at the University of Wisconsin, Madison. In addition to invalidity and non-infringement defenses, Intel claimed that it had obtained a license to the patent in suit based on funding provided to one of the Wisconsin inventors. Two weeks before trial, the court granted WARF's summary judgment motion that Intel had no license to the patent. The Court also denied Intel's motion for summary judgment that the patent was invalid for anticipation, adopting WARF's construction of a key claim limitation. The Court stated that the construction "is fatal to defendant's contention" of anticipation in its motion. Two weeks later, three days before trial, Intel and WARF settled the case.

Microprocessor Enhancement Corp. v. Texas Instruments, Inc. – Mr. Frischling represented Texas Instruments in this case in the Central District of California. Microprocessor Enhancement Corporation is a subsidiary of patent holding and enforcement company Acacia Research. Acacia is one of the country's largest and most aggressive serial filers of patent litigation, claiming to control some 60 separate patent portfolios. Acacia sued Texas Instruments for patent infringement, asserting that the architecture of TI's high-performance C6000 line of digital signal processing chips infringed Acacia's patent. Acacia sought over $94 million in damages and a permanent injunction against future sales of these products. Mr. Frischling and his colleagues obtained a complete victory for TI. Following the close of discovery, Chief Judge Alicemarie H. Stotler ruled in TI's favor on summary judgment, finding that TI did not infringe the Acacia patent, that all claims of the patent are invalid, and that TI should recover its litigation costs. MEC appealed this decision and Mr. Firschling argued the case before the United States Court of Appeals for the Federal Circuit. On April 1, 2008, the Federal Circuit affirmed the judgment of non-infringement in favor TI, in a published decision.

Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc./Guidant Corp. v. St. Jude Medical, Inc. – Mr. Frischling represented Pacesetter, Inc., and St. Jude Medical in this patent infringement case in Delaware. Pacesetter is a subsidiary of St. Jude that designs, develops and manufactures Implantable Cardioverter Defibrillators (ICDs) and other devices for treating heart problems such as life-threatening ventricular arrhythmias and congestive heart failure. ICDs continually monitor the rhythms of the heart and, when necessary, can deliver a life-saving electrical jolt. Following a hearing on summary judgment and claim construction issues in March 2007, the case was settled successfully.

Intergraph Hardware Technologies Co., Inc. v. Hewlett-Packard Co. – Mr. Frischling represented Hewlett-Packard in this case in the Eastern District of Texas involving patents relating to multi-processor computer server systems. The plaintiff alleged that HP’s high-end server systems, representing $2 billion a year in revenues, infringed the patents. Following a very favorable claim construction ruling, the case was successfully settled before trial.

Townshend Intellectual Property, L.L.C. v. Cisco Systems, Inc. – Mr. Frischling served as lead counsel for Cisco in this complex multi-party lawsuit involving eight patents that allegedly cover substantially all dial-up modems in use today. After several years of litigation, the case was favorably settled at the close of discovery.

Pitney Bowes Inc. v. Stamps.com Inc./Stamps.com Inc. v. Pitney Bowes Inc. – Mr. Frischling was lead counsel representing Stamps.com in this multi-faceted litigation against Pitney Bowes involving technology for delivering postage, or other evidence of value, over the internet. The case involved over a dozen patents asserted in four lawsuits, pending at various times before three different courts. Following favorable Markman and summary judgment rulings in the two lead cases, a successful global settlement was reached.

Bayer AG v. Elan Pharmaceutical Research Corp. – Mr. Frischling obtained a summary judgment in favor of our client, Elan, in a lawsuit involving the first generic alternative to Bayer’s $400 million per year blood pressure drug Adalat CC. The decision was affirmed by the Court of Appeals for the Federal Circuit.

Pfizer, Inc. v. Elan Pharmaceutical Research Corp., et al. – This case involved the interplay of patent law and the law governing FDA approval of new drugs. Pfizer filed a patent infringement lawsuit against Elan in federal court in Delaware, seeking an injunction to block FDA approval of Elan’s once-daily version of the cardiovascular drug Nifedipine, which would compete with Pfizer’s Procardia XL (a blockbuster drug with over $1 billion in annual sales). Mr. Frischling acted as Elan’s principal counsel on issues of patent infringement and validity, successfully defeating a preliminary injunction motion and prevailing on a motion to dismiss.

AT&T Corp. v. Microsoft Corporation – In this case, AT&T sought access to source code for Windows NT 5.0 pursuant to a contract with Microsoft. After a week-long preliminary injunction hearing, the matter was settled successfully.

The Shape of Things to Come: Design Patent Protection for Computers, The Computer Lawyer, November 1992; The Shape of Things to Come: Trademark Protection for Computers, The Computer Lawyer, December 1992 (co-author).

A Structured Approach to Analyzing the Substantial Similarity of Computer Software in Copyright Infringement Cases, 20 Arizona State Law Journal 625, 1988 (co-author).

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Seminars & Speaking Engagements

“Assessing the Pros and Cons of Launching during Litigation and Considering the Downstream Impact an ‘At Risk’ Launch Can Have on Your Settlement Strategy,” Momentum Events’ International Congress on Paragraph IV Litigation, September 2013, New York.

“Recent Federal Circuit Decisions re Impace of the Tangentiality and ‘Some Other Reason’ Criteria on Application of Prosecution History Estoppel and the Doctrine of Equivalents,” Patent Law Committee Meeting, AIPLA 2007 Annual Meeting, October 2007, Washington, D.C.

"Grokking Grokster: Has the Supreme Court Changed Inducement under Patent Law?," 2005 Advanced Patent Law Institute, December 2005, San Jose.

"Patents in an On-Line World: Navigating the Minefield, Hot Risks, Opportunities and Strategies for Succeeding in a Digital World," Computer Law Association and John Marshall Law School, November 1999, Chicago.